Kelly W. Cunningham

Kelly W. Cunningham

Experience: Mr. Cunningham has over 20 years of experience in patent, trademark, and copyright infringement litigation, spanning numerous district courts and appellate courts throughout the country. He is well respected by courts and opposing counsel alike for coming up with creative solutions for resolving disputes in his clients’ favor.

Worked with members of the House Subcommittee on Intellectual Property Law, as a scientist and an intellectual property lawyer, Mr. Cunningham helped draft portions of the America Invents Act.

He also creates company-wide intellectual property strategies that maximize client profitability and minimize the chance of encountering the need to engage in litigation or disputes.

Education: Mr. Cunningham holds a B.S. in Materials Science and Engineering from UCLA and a J.D. from the UCLA School of Law.

Litigation Successes:

Diopsys v. Konan Medical, Case No.: 2:15-cv-05882-WHW-CLW (D.NJ 2017). In patent infringement action against Konan Medical (my client), I submitted a declaration of the inventor, who no longer worked at Diopsys, in favor of Konan Medical’s proposed claim construction. I opposed Diopsys’ motion to strike the declaration, and the Court agreed, denying Diopsys’ motion.

Pinkette Clothing, Inc. v. Cosmetic Warriors LLC, Case No. 15-CV-4950 SJO (C.D. Cal. 2017). Cosmetic Warriors (CW), which had used LUSH for cosmetics for nearly 20 years, challenged Pinkette’s use of LUSH as a trademark for clothing. I developed Pinkette’s defense that clothing and cosmetics are not sufficiently related and that CW’s delay in raising the challenge (more than 12 years after Pinkette had begun using the mark and more than four years after Pinkette had federally registered its LUSH trademark for clothing) was unreasonable delay. The jury returned a verdict that CW’s delay was unreasonable.

United Const. Products, Inc. v. Tile Tech, Inc., 843 F.3d 1363 (Fed. Cir. 2016). Tile Tech (my client) received a default judgment under other counsel, and retained me to appeal the judgement. On appeal, I obtained a decision that greatly narrowed the judgment, reducing the district court’s injunction of “any substantially similar” product to an injunction of only any product that “actually infringes;” removing the district court’s requirement that Tile Tech hand over its molds; and replacing the district court’s prohibition on “using images of United’s products and drawings” to simply prohibiting any misrepresentation or false identification of United products as its own.

Hans Kusters Music NV v. Creative on Demand, Inc., et al., 14-CV-8714-FFM (C.D. Cal. 2015). Represented defendants in a copyright infringement suit involving a popular soccer chant in a Volkswagen commercial, reaching settlement that was very favorable for client.

VirnetX v. Apple, 767 F.3d 1308, 1322 (Fed. Cir. 2014). I prepared for co-plaintiff and leading Fortune 500 defense and national security company, Science Applications International Corp. (SAIC), a number of opinions of counsel that Apple’s FaceTime infringes several of the patents SAIC had sold to VirnetX claiming secure communications protocol over the internet. Oversaw deposition of Apple personnel and jury instructions for patent infringement liability leading to jury verdicts of patent infringement, which were affirmed by the Federal Circuit Court of Appeal.

Doria International, Inc. v. CaseMate, Inc., Case No. 12-09544 GAF (C.D. Cal. 2013). Representing one of the world’s largest iPhone case manufacturers, I demonstrated how our client’s mobile phone cases do not infringe the design patents of one of the largest iPhone case manufacturers in the United States, leading to a very favorable settlement for my client.

In re Kiani, U.S. Patent No. 7,700,137 (PTAB 2010). I drafted and prosecuted patent applications for anti-viral compositions and methods. I appeal one of the rejections to the Board of Patent Appeals, where I prevailed on a pre-appeal brief request for review, resulting in a quick reversal and a patent, followed by three other U.S. patents and five patents in Europe covering the invention.

International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009). I wrote the winning brief, for Walgreens, persuading the Federal Circuit Court of Appeals to reverse its own precedents spanning over 25 years and establish a new test that all district courts now must apply to determine whether a design patent is valid or invalid.

AICO v. Anthony California, 439 F.3d 1365 (Fed. Cir. 2006). We wrote the winning brief that the Federal Circuit Court of Appeals adopted establishing the test that all district courts throughout the country now must apply when interpreting the scope of design patents.

Illinois Tool v. Independent Ink, Inc., 547 U.S. 28 (2006). We developed and argued a theory of antitrust violation for tying the sale of patented printer cartridges to the sale of unpatented ink, which the Federal Circuit Court of Appeals adopted in part and then reached the United Supreme Court.

BJI Energy Solutions, LLC v. Artemis Technologies, 2004 U.S. Dist. LEXIS 32505 (C.D. Cal. 2004). Artemis Technologies (our client) was sued in the Central District of California for patent infringement. I got the suit dismissed on the grounds that the Court had no personal jurisdiction over Artemis Technologies even though its predecessor was involved in unsuccessful merger negotiations with BJI’s predecessor, which was a California corporation with headquarters in the Central District of California.

Wolf Designs v. McElvoy. 341 F.Supp. 2d 639 (N.D. Tex. 2004). We got the District Court in Texas to stay that case in favor of the parallel case we had filed in the Central District of California.

Guthy-Renker Corp. v. Bernstein, 30 Fed. Appx. 584 (9th 2002). The Ninth Circuit adopted our argument that the liquidation damages clause in dispute was an invalid penalty because the amount bore no reasonable relationship to the range of actual damages the parties could have anticipated arising from the alleged breach of contract.

OroAmerica v. Nudelman, Case No. CV 99-5780 GHK (C.D. Cal. 2001). Obtained preliminary injunction prohibiting the defendant from selling numerous necklace charms and pendants on the grounds our client was likely to prevail on its copyright infringement claim. Uncovered evidence deep in the record that disproved defendants’ claim that they had the earlier creation date.

Winner International v. Wang, 202 F.3d 1340 (Fed. Cir. 2000). Uncovered a detail I found deep in the file history that supported our proposed narrow construction of patent claims, which would have cleared client from infringement decisions. The Federal Circuit Court of Appeals specifically commented that the detail from the file history indeed created a “close call.”

Cerveceria Modelo, S.A. de C.V. v. R.B. Marco, 55 U.S.P.Q.2d 1298 (TTAB 1999). In order to extend our client’s CORONA EXTRA trademark registrations to clothing, we petitioned to cancel a federal trademark registration for CORONA for clothing owned by R.B. Marco. We demonstrated to the Trademark Trial and Appeal Board’s satisfaction that R.B. Marco had fraudulently altered its sales records to hide the fact that it had abandoned the mark. As a result, the Trademark Trial and Appeal Board canceled R.B. Marco’s federal registration.

Admissions:
United States Patent and Trademark Office
California Supreme Court
Federal Circuit Court of Appeals
Ninth Circuit Court of Appeals
Central District of California
Northern District of California
Southern District of California
District of Colorado